`Tel: 571-272-7822
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`Paper 22
`Entered: May 27, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SANDOZ INC.,
`Petitioner,
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`v.
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`PHARMACYCLICS LLC,
`Patent Owner.
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`
`
`Case IPR2019-00865
`Patent 9,795,604 B2
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`
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`Before SHERIDAN K. SNEDDEN, JENNIFER MEYER CHAGNON, and
`DAVID COTTA, Administrative Patent Judges.
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`COTTA, Administrative Patent Judge.
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`
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`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`IPR2019-00865
`Patent 9,795,604 B2
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`On Tuesday May 12, Patent Owner emailed the Board to request
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`authorization to “file a motion to strike improper new arguments included in
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`Petitioner’s Reply Brief pursuant to 37 C.F.R. § 42.23(b).” Ex. 3001. The
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`email specifically identified Section III.B and Section III.C.1 of Petitioner’s
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`Reply as presenting new arguments. Id. Petitioner opposes Patent Owner’s
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`request. Id. A teleconference was held on Friday, May 15, 2018, wherein
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`both parties had the opportunity to discuss Patent Owner’s request with the
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`panel.
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`During the call, Patent Owner argued that the argument presented in
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`Sections III.B and III.C of Petitioner’s Reply constitutes new argument and
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`that it would be prejudiced by having to devote space in its Sur-Reply to
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`addressing this material. Patent Owner made clear that resolution of
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`whether Petitioner’s arguments were, in fact, new arguments, was not time
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`sensitive and that it would not be prejudiced if we resolve the issue after oral
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`argument. Patent Owner did, however, request that we issue a decision on
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`whether to authorize its motion to strike before the deadline for filing its
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`Sur-Reply. Patent Owner proposed that briefing on this issue occur on the
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`same schedule as provided for motions to exclude.
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`Petitioner argued that the material at issue was not new argument, that
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`the material identified as new argument was not lengthy, and that Patent
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`Owner did not act promptly in reaching out to the Board with its request for
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`authorization.
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`We share Petitioner’s concern that Patent Owner delayed in seeking
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`authorization to file a motion to strike. See Patent Trial and Appeal Board
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`2
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`IPR2019-00865
`Patent 9,795,604 B2
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`Consolidated Trial Practice Guide (Nov. 2019)1 at 81 (“Generally,
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`authorization to file a motion to strike should be requested within one week
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`of the allegedly improper submission.”) We also recognize that that the
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`material at issue constitutes just two paragraphs in Petitioner’s Reply, and
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`that Petitioner’s alleged new argument could be addressed in a Sur-Reply.
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`However, we find that briefing on this issue would be helpful to the panel in
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`resolving this issue. Accordingly, we authorize Patent Owner to file a
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`motion to strike regarding only the material presented in Sections III.B and
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`III.C of Petitioner’s Reply on the basis that it presents new argument.
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`It is therefore,
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`ORDERED that Patent Owner’s request for leave to file a motion to
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`strike Sections III.B and III.C of Petitioner’s Reply is granted. Patent
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`Owner’s motion shall not exceed three pages and shall be filed by DUE
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`DATE 5 of the Scheduling Order (Paper 10), accounting for any stipulations
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`to extend deadlines agreed to by the parties.
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`FURTHER ORDERED that Petitioner may file an opposition to
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`Patent Owner’s motion. Petitioner’s opposition shall not exceed three pages
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`and shall be filed by DUE DATE 6 of the Scheduling Order (Paper 10),
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`accounting for any stipulations to extend deadlines agreed to by the parties.
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`FURTHER ORDERED that Patent Owner may file a reply to
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`Petitioner’s Opposition. Patent Owner’s Reply shall not exceed one page
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`and shall be filed by DUE DATE 7.
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`1 Available at:
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf
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`3
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`IPR2019-00865
`Patent 9,795,604 B2
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`PETITIONER:
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`Kirk T. Bradley
`Siraj M. Abhyankar
`ALSTON & BIRD LLP
`kirk.bradley@alston.com
`shri.abhyankar@alston.com
`
`
`
`PATENT OWNER:
`William B. Raich
`Erin M. Sommers
`Cora R. Holt
`Stefan O. Ochiana
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`william.raich@finnegan.com
`erin.sommers@finnegan.com
`cora.holt@finnegan.com
`stefan.ochiana@finnegan.com
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`4
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`